Court Invalidates Two Patents and Awards Summary Judge to Defendant

In an October 25, 2013 ruling, Judge John F. Keenan granted IBM's motion for summary judgment dismissing plaintiff Alexander Orenshteyn's long-running patent infringement action.  The plaintiff asserted two patents, the '569 patent and the '942 patent, against IBM in this action, which was then stayed pending the outcome of litigation on the same two patents against Citrix Systems, Inc. in the Southern District of Florida.  The Florida district court granted summary judgment of non-infringement, but the Federal Circuit overturned the decision for the '942 patent.  The parties lifted the stay in the action before Judge Keenan, and the Florida district court then almost immediately invalided the asserted claim, claim 1, of the '942 patent.  IBM then moved for summary judgment, arguing that the same reasoning used to invalidate claim 1 of the '942 patent applied equally to all the asserted claims in the '569 and '942 patent.

Judge Keenan first noted that under Federal Circuit law as applied in the district, "'collateral estoppel may apply to patent claims that were not previously adjudicated, because the "issues" litigated, not the specific claims around which the issues were framed" are determinative,'" and that "collateral estoppel 'forecloses patent claims that are "patentably indistinct" from rejected claims.'"  The plaintiff argued against the application of collateral estoppel by contending that his counsel's failure to fully oppose the summary judgment motion in the Florida district court amounted to a "default."  The Court rejected this argument, ruling that a "default" is narrowly defined under Fed. R. Civ. P. 55(a), and noting that in his appeal to the Federal Circuit of the Florida district court's decision, the plaintiff was represented by the same counsel as has appeared in this action.

Copyright Claims Over Alleged Misuse of Plaintiff's Photographs Dismissed

In an August 6, 2013 ruling, Judge Loretta A. Preska dismissed the copyright infringement claims that Muench Photography, Inc. had asserted against John Wiley & Sons, Inc.  Muench had a contract with Corbis Corporation for the licensing of Muench's photographs to third parties.  Corbis licensed certain of plaintiff's photographs to Wiley that "contained express limitations on Defendant's use of" them.  Plaintiff's First Amended Complaint, which asserted copyright infringement and breach of contract claims, alleged that Wiley's use of their photographs exceeded the scope of the license in a number of ways, and that Wiley entered into the license knowing that its use would exceed the scope.  Wiley moved to dismiss the copyright claims arguing that Muench was collaterally estopped by a ruling in another litigation because the "claims rely upon copyright registrations that this Court has already held to be insufficient to bring the instant suit."  Muench argued that collateral estoppel was inappropriate because the earlier ruling was not yet final.  Judge Preska avoided the estoppel issue, and simply adhered to her reasoning in the earlier decision that the copyrights were "invalid as to Muench's individual works . . . because Muench was not listed as an author," as required by the Copyright Act.  The Court allowed limited breach of contract claims to proceed.

No Collateral Estoppel from General Jury Verdict in Patent Infringement Action

In an August 1, 2013 ruling, Judge George B. Daniels denied reconsideration of his earlier decision declining to give collateral estoppel effect to a general jury verdict from the Eastern District of Texas finding non-infringement of two patents asserted by Alcatel-Lucent USA, Inc.  After the Eastern District of Texas jury verdict was rendered finding that Overstock and Newegg did not infringe the Alcatel-Lucent patents, Barnes & Noble, Inc. moved before Judge Daniels seeking to collaterally estop the assertion of those same patents against it.  The Court denied the motion, and Barnes & Noble sought reconsideration, arguing that the Court "'misapprehended or overlooked . . . how to interpret the general verdicts of non-infringement in the Texas case.'"  Judge Daniels rejected the argument, stating:  "To find non-infringement, the jury only had to find that the accused Newegg and Overstock systems did not include each and every requirement or limitation of the claims. . . . Given the general jury verdict, there is no way of knowing which requirement recited in the asserted patent claims the jury found were not met.  Consequently, there is also no way of knowing if the requirement the jury found not met is identical to a limitation in the different claims at issue in this case."